Building the right IP for your business

H2020 GA #780460
Trainers
Locations
Date
Helping today’s researchers
create tomorrow’s enterprises
This project has received funding from the European Union’s Horizon 2020 research and innovation programme under grant agreement No 780460
Workshop 8- Building the right IP for your business

H2020 GA #780460
Agenda
2
Introductions to MERLIN project and each other
Ice breaker
How to work within local and university regulations
Conclusions and info on next events
Spin off /Start up - what’s the difference?
Creating sustainable commercial partnerships
Intellectual Property – different types
Intellectual Property exercise

H2020 GA #780460
Learning objectives
3
Understand the key
differences between
operating a spin-off
and a start-up
Understand how to
work within local and
university regulations
to launch a spin-out
Creating sustainable
commercial
partnerships
Dealing with IP issues
such as patents and
trademarks and
licensing

H2020 GA #780460
Workshop Guidelines
 No question is a
silly question
4
 What is said in the room
stays in the room
 Support and
challenge each other

H2020 GA #780460
General information
 Housekeeping
5
 Coffee break  Slide availability

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MERLIN partners
6
3 Incubators
Universidad Politécnica de Cartagena
St John’s Innovation Centre
Poznan Science and Technology Park
2 Consultancy Companies
BluSpecs
CIVITTA

H2020 GA #780460
About MERLIN project
7
MERLIN project aims to stimulate the interest in the creation of startups, spin-offs, patents and licensing
agreements among ICT researchers, providing them with the business skills that would help them to
commercialize their research findings and successfully introduce them to the market, and introducing
them to their local and European entrepreneurial ecosystems
https://merlin-ict.eu
http://bit.ly/merlinVideoShort
Organization of more than 40
practical thematic workshops in
several European cities, including
Cambridge, Madrid, Poznan, Vilnius,
Berlin, Warsaw, Bucharest, Tallinn
Participation in 5
international
conferences, organizing
workshops and forums
Organization of 8
meetups with
potential customers,
commercial partners,
and investors
Preparation of 4
webinars on SME
growth and PPP
business models

H2020 GA #780460
Icebreaker
The Question Game
8
?

H2020 GA #780460
Difference between Start-Up vs
Spin-Off?
9

H2020 GA #780460
What is a Start-Up?
A start-up is a newly emerged business
venture that aims to meet a marketplace
need, want or problem by developing a
viable business model around products,
services, processes or platforms.
10

H2020 GA #780460
What is a Spin-Off
A spin-off company can be
defined as a new, small,
company formed to exploit IP
developed during the course of
an individual's employment in a
larger organisation (e.g. a
university).
11

H2020 GA #780460
12
All spin-offs are start-ups but not all
start-ups are spin-offs

H2020 GA #780460
What’s the difference? Exercise (15 mins)
13

H2020 GA #780460
Compare and contrast (1)
Spin-off
o Origin – takes place within the
academic/research institution
o University IP ownership stake
o University is a shareholder - shared
equity arrangements
o Impact – may be social as well as
financial
Start-up
o Origin – outside the
academic/research institution
o IP is self-owned for company benefit
o Owned by founders
o Shareholder agreement between
founders. Equity agreed by founders
and negotiated with any investors
14

H2020 GA #780460
Spin-off
o May allow flexible roles
o University contribution to IP costs
o Support with initial costs and
introductions to investors (sometimes!)
o Ongoing support with
commercialisation – access to
specialists i.e. IP, legal
o Access to facilities – lab space plus
technical input
o Access to University support
programmes e.g. iCure in UK
o May find potential commercial
partners
Start-up
o Likely to be full time in the business
o IP and initial costs usually self financed
or via fundraising -friends and family,
grants, investment
o Need to find ongoing support and
ensure sufficient resources to cover
costs
o Need to find own premises and
source specialist equipment
o Need to source own commercial
partners and any ongoing support
requirements
15

H2020 GA #780460
16
Spin-off
o Process of agreeing Spin off with
parent may be lengthy, bureaucratic
and lacking in flexibility
o Possible obligation to include
university employees in team
o Exit- University will be looking for a
planned exit within agreed
timescales. Often seeking early
returns
o You might not get the terms you want
Start-up
o Can progress more quickly without
bureaucracy/decision making by
others outside the business
o Founders choose and build the team
o Exit is at the discretion of the founders
and any investors
o The Board is in control

H2020 GA #780460
Start-up: A possible journey
17
Idea to
solve a
problem
Competitor
analysis/
market and
IP research
Build MVP
Trial product
and verify
Commercialisation
Plan
Marketing
and
Customer
acquisition
Company
legal
structure
and IP
strategy
FundingBuild a team

H2020 GA #780460
Spin-off: A possible journey
18
R&D/research
project results
with potential
to
commercialise
University
personnel
agreed
Shareholder
agreement
Technology
Licensing
arrangements
agreed
Commercialisat
ion plan
Final approval
of terms and
completion
Raising
investment/
finance
Initial
discussion
with
University
University
permission and
ownership
arrangements
IP ownership
agreed with
University

H2020 GA #780460
Spin-off case study: Ziylo

H2020 GA #780460
Start Up Case Study – Raspberry Pi
20

H2020 GA #780460
Intellectual Property- IP
21

H2020 GA #780460
IP - is it really necessary? Yes! Why?
What is IP? Intellectual property (IP) refers to creations of the mind, such as
inventions; literary and artistic works; designs; and symbols, names and images used
in commerce*
You do not need IP to commercialise products
• IP is not a right to practice an invention
• Obtaining IP will not guarantee commercial success
But…IP can be:
• A weapon or bargaining tool
• A source of revenue
22© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.
*(Source: World Intellectual
Property Office (WIPO))

H2020 GA #780460
IP – is it worth it?
Often cited figure: IP can constitute up to 80% of a company’s value
o Coca-Cola - Brand worth $80.31 billion in 2016
o Black and Decker Workmate – independent inventor patented product
– licensed on over 30 million units worldwide
o Ketchup bottle valve (patented) – company sold for $13 million in 1995
o iPhone (design) – nearly $400 million in damages against Samsung (now
under review)

H2020 GA #780460
Different IP rights
24
Improvements to
products or processes
Inventions
Concepts
Applications for
new discoveries
Product
appearance
Graphics
Packaging
PatentsCopyright
Designs
Dance & mime
LiteratureMusic
Films
Photographs
Trade
names
Get-up
Slogans
Goodwill
Trade marks
Products
Other
Trade secrets
Reputation Know-how
Inside knowledge
© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.

H2020 GA #780460
Unregistered IP

H2020 GA #780460
Registered IP

H2020 GA #780460
Copyright – what does it protect?
 Books, technical reports, manuals, databases
 Engineering, technical or architectural plans
 Paintings, sculptures, photographs
 Music, songs, plays, dramatic works
 Promotional literature, advertising
 Films, videos, cable or radio broadcasts
 Computer software
27

H2020 GA #780460
28
• Usually the first creator or author... …or
their employer if produced in the
ordinary course of their employment
• However, a contractor will retain
ownership unless their contract is
explicit to the contrary
• Even if the creator sells their rights, they
have ‘moral rights’ over how their work
is used
Who owns the
copyright?!

H2020 GA #780460
 Any sign which is capable of being represented graphically
 Any sign which is capable of distinguishing the goods or services of one
undertaking from another
A Badge of Origin
Trademarks
29
TM

H2020 GA #780460
Benefits of registering a trade mark
30
Protects your brand value
Builds an asset
Defends against rival marks
Defines your rights
Prevents counterfeiting and fraud

H2020 GA #780460
Trademarks (2)
 Name
 Logo
 Domain Name
 What can be registered?
 Slogan
31
 Colour theme
 Shape theme
 Music
 Smell!

H2020 GA #780460
Unacceptable Trademarks
32
• They have become customary
in your line of trade
• describe your goods or services
or any characteristics of them
• are not distinctive
• are offensive
• are against the law
• are deceptive
Marks will not be
accepted if;

H2020 GA #780460
How to register a Trademark
International
registration via
WIPO
33
EU-wide protection
(all EU Member
States) via EU IPO
National level, via national EU IP
offices
Regional level registration in
Belgium, the Netherlands
and/or Luxembourg, via BOIP.
Benelux Office of International
Property

H2020 GA #780460
Registered Designs
Protects shape or configuration ( ) and/or pattern or ornamentation (2-D)
No protection for function, materials or technology of manufacture
No protection when form is dictated by function (ie: no design freedom)
34

H2020 GA #780460
How to register a Design
35
Doing business in one country only
Register design with that
country
gives exclusive rights but won’t
be able to prevent anyone
from copying in other EU
countries
…consider a Registered Community design (RCD)
Do business in more than one country

H2020 GA #780460
Searches for existing IP
36

H2020 GA #780460
Patents
• Product, process, apparatus
• how things work
• what they do
• how they do it
• what they are made of
• how they are made
Most patents are for incremental
improvements in known technology –
evolution rather than revolution
• The invention must be new, inventive
and industrially applicable
• First English patent granted by Henry VI
in 1449 - method of making stained
glass.
Protection for a
technical invention:

H2020 GA #780460
Example Patent Claim – Quiz 1
Which stationary item is covered by the following claim:
A sheet metal binder clip having
extremities maintained in juxtaposition by the resiliency of the metal,
handle receiving and operating jaws formed at said extremities and
comprising separated, oppositely disposed duplex cam surfaces and
handles having opposite ends journaled in said jaws and operating against said cam
surfaces.

H2020 GA #780460
What is a Patent? Quiz 1 - Answer
US1,139,627

H2020 GA #780460
Example Patent Claim – Quiz 2
1. A system for engaging shoes with a hitch means to permit a person standing on a stage surface to lean
forwardly beyond his or her center of gravity, comprising:
at least one shoe having a heel with a first engagement means, said first engagement means comprising
a recess formed in a heel of said shoe covered with a heel slot plane located at a bottom region of said
heel, said heel slot plate having a slot formed therein with a relatively wide opening at a leading edge of
said heel and a narrower terminal end rearward of said leading edge, said recess being larger in size
above said terminal end of said slot than is said terminal end of said slot; and
a second engagement means, detachably engageable with said first engagement means, comprising a
hitch member having an enlarged head portion connected by a narrower shank portion to a means for
raising and lowering said head of said hitch member above and substantially level with or below said
stage surface, said head portion being larger in size than said terminal end of said slot and said shank
portion being narrower than said terminal end of said slot, wherein said hitch member can be moved
through apertures in said stage surface between a projecting position raised above said stage surface
and a retracted position at or below the stage surface, and when said head portion of said hitch
member is raised above said stage surface, said first engagement means can be detachably engaged
with said projecting hitch member, thereby allowing a person wearing the shoes to lean forwardly with
his or her normal center of gravity beyond a front region of said shoes, and maintain said forward lean.

H2020 GA #780460
What is a Patent? Quiz 2 - Answer

H2020 GA #780460
How to spot an opportunity
42
Is the feature new?
Is the feature inventive?
Would a patent be
valuable?
Better than secrecy?
Reasonable product life?
Costs justifiable?
File Application
Do not file a patent
application
No
No
No
No
No
No
Yes or maybe
Yes or maybe
Yes or maybe
Yes or maybe
Yes or maybe
Yes or maybe
© 2018 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.

H2020 GA #780460
Working with university and
other regulations
Creating sustainable
commercial partnerships
44

H2020 GA #780460
Working within local and University regulations
What does your contract with the University say? Who owns the IP?
What does the University’s IP policy say?
Involve the Technology Transfer Office from the start
Take your own legal advice if you think the University doesn’t own the IP before walking off
with it

H2020 GA #780460
You’ve got your IP in
good order, so what
could go wrong?
46

H2020 GA #780460
Lots of things, actually
• IP Ownership
• Commercial
• Administrative
• Regulatory
• Personal
• Contractual
What could go
wrong?!

H2020 GA #780460
Do you have the right people?
o Do they get on with each other? Do they get on with outsiders?
o Are they experienced? Is their experience the right kind?
o Do you need mentors?
o Is anyone missing?
o Experienced CEO
o Marketing person from the right sector
Remember, needn't be employed full-time
o Is anyone superfluous?
o The CEO's best mate
o The PhD supervisor who didn't actually do anything

H2020 GA #780460
The technology is oh, so, fascinating BUT:
o Is it already out there?
o Would anyone want it anyway?
o Might someone beat you to it?
o Might it just bomb even if it's good?
o Are you the ones who should be selling it anyway? Do you need:
New Staff? Agents? Distributors

H2020 GA #780460
Good Housekeeping
Keep up to date records of:
o Inventions
o IP portfolio
o Know-how
o Contracts
o Confidential information disclosed and received
o Excel spreadsheets with summaries are a good idea
o Diarise key dates

H2020 GA #780460
Know the regulatory and legal framework
Do you need insurance?
• Company law
• Directors’ duties
• Data protection
• Freedom of information
• Trading and advertising
standards
Generally;
• Industry Standards
• GCP
• GLP
• GMP
• Patent consent and
confidentiality
For your
sector;

H2020 GA #780460
You will be entering into contracts such as:
o IP assignments and licences in
o Confidentiality agreements
o Materials transfer agreements
o Employment and director's service agreements
o Consultancy agreements
o R&D Collaborations
o Licences out
o Agency and distribution agreements
o Standard terms of purchase and supply

H2020 GA #780460
Contracts – Common pitfalls
o There is no contract
o It's written on the back of a fag packet
o It makes no sense or is vaguely drafted
o It bears no relation to reality
o Not all stakeholders know about it
o It is hideously one-sided
o It contains illegal or unenforceable provisions
o It is subject to foreign law and jurisdiction

H2020 GA #780460
Why you may not actually own “your” IP
• Inventors never assigned rights into company
• Consultant still owns IP
• Inadequate wording - "X will assign to Y"
• Co-owners you didn't know about
• Other parties with rights e.g. grantors

H2020 GA #780460
Dealing with big companies?
What are the Pros and Cons?
5 mins in small groups
55

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Pros and cons of dealing with big
companies?
56
Pros
Experience
Competitive
advantage
Transition to scaling
company
Stronger supply chain
Better leverage of
resources
Distribution routes
Increased revenue
Cons
Decision making can
be slow
Pricing
Payments may be slow
Can de dropped
without warning
Over reliance on one
company

H2020 GA #780460
Marks & Clerk LLP
Simon Portman | Managing Associate
Solicitor (UK)
Marks & Clerk Solicitors LLP
D +44 1223 345521 | F +44 20 7420 0255
sportman@marks-clerk.com | 62-68 Hills Road,
Cambridge CB2 1LA, UK
Dr. Esther Ford | Partner
Registered (UK) and European Patent Attorney
for Marks & Clerk LLP
D +44 1223 345526 | F +44 1223 365560
eford@marks-clerk.com | 62-68 Hills Road, Cambridge
CB2 1LA, UK
Marks & Clerk has long been recognised as one of the leading patent and trade mark attorney firms across
the globe, with eight offices across the UK and a further nine in North America and the Asia-Pacific. We are
committed to providing exceptional intellectual property advice around the world, helping you to navigate
the complexities of IP, patents, trade marks and design protection. Innovation is the life-blood of business
and it’s vital that you do not overlook the need to protect your intellectual property. From the capture of an
idea, to the enforcement or defence of rights in disputes Marks & Clerk is your expert partner to ensure
your IP is protected and fully exploited. Today’s local is tomorrow’s global – and with our diverse team of
practitioners, you’re always supported by a network of experts.

H2020 GA #780460
Guest Speaker - Corrosion Radar
58

H2020 GA #780460
Guest Speaker - Camnexus
59

H2020 GA #780460
Round-Table Q&A
60
Spin Out
company
Start-Up
Company
IP Lawyer
Tech Transfer
Officer
Facilitator

H2020 GA #780460
If you want to go deeper
61
Useful Links
https://euipo.europa.eu/ohimportal/en Intellectual Property Office for
Europe
http://www.wipo.int/portal/en/index.html - World Intellectual Property
Organisation
https://www.eucopyright.com/
https://euipo.europa.eu/ohimportal/en/image-search-design
https://www.tmdn.org/tmdsview-web/welcome Design View Centralized
access point to view the registered design information held by any of the
participating National Offices,
https://www.gov.uk/search-registered-design - Find a registered design in
UK
https://euipo.europa.eu/eSearch/ Search trademarks, designs, owners in
the EU
https://www.tmdn.org/tmview/welcome - Trademark database plus
details for national offices
https://www.epo.org/applying/basics.html Applying for a European
patent
https://www.epo.org/searching-for-
patents/technical/espacenet.html#tab-1 Patent search tool

H2020 GA #780460
Information about next workshops in XYZ
62

H2020 GA #780460
63
Supplementary slides for further depth if needed.

Building the right IP for your business

Building the right IP for your business

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